IP-Transfer 3.0 – The Pocketknife Transfer
The IP-Wahl-O-Meter is aimed at start-up teams at universities and research institutions who are:
(1.) seeking to endow their spin-off, which was created at the scientific institution, with intellectual property or ownership rights.
(2.) starting the negotiation process with the technology transfer organization or patent management of their alma mater.
The Beta Version of the IP-Wahl-O-Meter was developed by Christoph Heynen, Assistant Head of S-Outreach and Head of the AG Gründungsberatung & Entrepreneurship at the Friedrich-Alexander-Universität Erlangen-Nürnberg, as well as with input and feedback from the IP Transfer 3.0 pilot group and start-up teams.
TARGETED AIMS The aim of the IP-Wahl-O-Meter is to familiarize founders with the common types of IP rights granted, including the basic conditions, and thus to prepare them for potential discussions with their respective scientific institution. At the same time, based on a questionnaire, founders will be given an approximate assessment of which application models might be more suitable for their particular IP situation and which appear less suitable.
The reality of IP negotiations is diverse. The parties involved often agree on forms that deviate from the typical exploitation models or combine conditions of different models. The IP-Wahl-O-Meter is intended to provide an initial classification in preparation for this, but does not claim to be exhaustive or to be able to reliably predict a specific negotiation result or exploitation model. As a rule, the respective scientific institutions have different IP exploitation strategies and policies, which may differ from the exploitation models considered here. Nevertheless, this tool provides start-up teams with an assessment based on the experience of a group of transfer professionals from different universities and research institutions and can therefore open up and point out a scope for design and solutions for potential negotiations.
Nevertheless, this tool provides start-up teams with an assessment based on the experience of a group of transfer professionals from different universities and research institutions, and so it can introduce and highlight a scope of designs and solutions for potential negotiations.
This tool deliberately only focuses on a basic assessment of the different application model types; however, it does not consider a precise evaluation of the conditions of IP and pricing. Although these are an essential subject of discussion for the continuation of IP negotiations, they heavily depend on the individual case as well as on the scientific institution and can hardly be covered by a single tool:
LINK: IP-Modell Wahl-O-Meter (Beta)
The following article by Extantia Capital provides information on structuring options and price components as well as potential quantitative framework conditions that could be significant when negotiating contract terms: "Negotiating technology transfer agreements like a pro".
If you have questions or feedback on the IP-Wahl-O-Meter, please send an email to the Stifterverband.
The recommendations are aimed at founding teams and those interested in founding a company in Germany who are dealing with the topic of IP valuation in order to obtain a concrete proposal for a practice-oriented valuation model for determining marketability. The model presented here also offers scientific institutions the possibility of a pragmatic approach to the valuation of IP in order to positively influence and significantly accelerate IP transfer negotiations.
For a market-driven, transparent, and universally applicable valuation of IP rights, it is necessary to illustrate the value-influencing factors in an easily understandable and standardized way. Based on factors influencing the patent value in accordance with DIN 77100 and considering the IP scoring model proposed by the European Patent and Trademark Office, an IP scorecard was developed that comprehensibly evaluates the influencing factors. The IP scorecard is supplemented by a questionnaire and process guideline.
This guideline does not constitute legal advice nor can it replace such advice.
These recommendations for translating the IP scorecard into an IP transfer model in the research-based spin-off process were developed by the IP Transfer 3.0 project steering group in consultation with the pilot group. In some points, however, the document tends to reflect the entrepreneurial perspective, which was validated by the results of the investor survey in spring 2024.
The original version of the IP scorecard was iteratively further developed by a working group of the IP Transfer 3.0 pilot group and now includes adapted evaluation criteria for the areas of "Life Science" and "Non-Life Science". In addition, these IP scorecards are now available as Excel files in both German and English:
The different variants of the IP scorecards are available under a Creative Commons license of the type "Attribution-NonCommercial-ShareAlike 4.0 International" (CC BY-NC-SA 4.0). Details on the license
Version 1.0 of the guideline for the market valuation of IP was developed by the project steering group of IP Transfer 3.0 with input and feedback from the project and pilot group (employees from the transfer offices of 17 universities and research institutions), start-up consultants, start-up teams, and experienced investors.
In some aspects, however, the document tends to reflect the entrepreneurial view, which was validated by the results of the investor survey in spring 2024.
If you have questions or feedback on the guideline or IP scorecard, please send an email to Stifterverband.
SPIN-OFFS FROM SCIENTIFIC INSTITUTIONS AND A COMPARISON TO THE SITUATION IN GERMANY – PREPARATION OF CURRENT STUDIES AND DATABASES
The topic of IP-based spin-offs from scientific institutions (universities, universities of applied sciences, and other research institutions) has gained increasingly more attention. It has often been criticized that the potential for applying public-funded research results is underutilized. But start-ups with a high economic and social impact, like BioNTech with its corona vaccine development, have set a noticeable example to the contrary.
The following comprehensive documents, including research results from the Fraunhofer ISI, provide an overview of current studies and databases at the national and international level.
If you have questions or feedback on the research documents, please send an email to Stifterverband.
To give better orientation for participation agreements in the context of IP transfer, practice-oriented sample agreements for different IP transfer scenarios have been created, which we are pleased to make available to you here.
The model contracts are intended as a balanced working aid for transfer offices, founding teams and investors. The law firms mazars and GÖRG will be happy to answer any questions or suggestions for improving the templates. Adaptations to specific individual cases can be discussed with the respective law firm. However, such a consultation is subject to a fee.
If you are interested in receiving the sample contract, please send your request to Stifterverband.
Further legal expertise and sample contracts are also available in the BMWK / BMBF IP Toolbox on the program website EXIST".
